CUBIST PHARMACEUTICALS, INC. v. HOSPIRA, INC. (Fed. Cir. 2015) (P) – A certificate of correction may be used to correct a chemical structure based on later discoveries

by Steve Driskill | Nov 12, 2015 | PTO Procedure

A certificate of correction may be used to correct the chemical structure of a claimed compound based on later discoveries when the specification as a whole makes clear that the patentee nevertheless possessed the compound at the time of filing. Here, for example, the...

IN RE STEED (Fed. Cir. 2015) (P) – No new evidence may be generally submitted on appeal at the PTO that was not before the primary examiner

by Steve Driskill | Oct 1, 2015 | [sub] appellate, PTO Procedure

Absent a recent decision of either the Board or a court, no new evidence may be submitted on appeal at the PTO that was not before the primary examiner. Here, for example, the applicant’s introduction only during the Board hearing of affidavits in support of a Rule...

DOME PATENT L.P. v. LEE (Fed. Cir. 2015) (P) – Preponderance of the evidence standard is the appropriate one for assessing invalidity during reexamination

by Steve Driskill | Sep 3, 2015 | [sub] reexamination, PTO Procedure

The preponderance of the evidence standard is the appropriate one for assessing invalidity during reexamination. Here, for example, the PTO found the claimed method at issue to be obvious and therefore unpatentable under a preponderance of the evidence standard even...

AIRBUS S.A.S. v. FIREPASS CORPORATION (Fed. Cir. 2015) (P) – The substantial new question of patentability requirement for reexamination does not extend to new claims

by Steve Driskill | Jul 17, 2015 | [sub] reexamination, PTO Procedure

The substantial new question of patentability requirement to institute reexamination proceedings does not extend to claims added after commencement of the reexamination. Here, for example, newly added claims during reexamination were found to be exempt from the...

MOHSENZADEH v. LEE (Fed. Cir. 2015) (P) – Patent term extension afforded to a parent application does not extend to any continuing applications

by Steve Driskill | Jun 25, 2015 | [sub] patent term adjustment, PTO Procedure

Patent term extension afforded to a parent application does not extend to any continuing applications. Here, for example, two divisional applications were found not to be entitled to the patent term adjustment in the parent application arising from the delay in...

G.D. SEARLE LLC v. LUPIN PHARMACEUTICALS, INC. (Fed. Cir. 2015) (P) – Reissue cannot be used to revert an issued continuation-in-part application back to true divisional status

by Steve Driskill | Jun 23, 2015 | [sub] reissue, PTO Procedure

Reissue cannot be used to revert an issued continuation-in-part application back to true divisional status. Here, for example, a reissue application filed to revert a continuation-in-part back to a divisional application and thereby invoke safe harbor protection...